1. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 1 Please take your seat Rob* Rob* David Patrick* Emily* Andy* Jenn Scott Asa Scott * Asa Chinyere Hernan Jennifer Helio* Helio Andy Jenn Scott Chinyere Scott Patrick Emily Rob Asa Hernan David* Rob Asa Asa Andy Jenn* Asa Scott Scott Helio Chinyere Jennifer Hernan* Patrick Rob Emily Rob David Screen RJM DOOR Whiteboard * Scribe This week's scribes: TOA: Helio, David Teacher's HW: Patrick This week - Purple Week 2 - Black Week 1- Gray shadow = law student

2. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 2 Today’s Agenda Finish Review of / Introduction to Patent Law: P!=C!=T; WHAT IS A PATENT (CONCRETE). Simulation schedule/5 person teams + coach to both At break: Figure out best time for Instant Patent Law SSI v TEK and KSR ~9:45 Adjourn 8:30 Break (timekeeper needed) 8:40 Resume

3. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 3 Teacher's Homework (per Andy) 1) How can we watch videos of past simulations? Links sent earlier today

4. RJM - IP: Sci Ev in Pat Lit - Spring 2013 4 To calculate the expiration of a patent, you need to know these dates. Then consult DOCS/TERMCALC.DOC on the 2012 course website (or read the statute).DOCS/TERMCALC.DOC The calculated date is not your final answer, however. You must also consider - nonpayment of maintenance fees - extensions due to delays by the government. But there’s good news! This is just FYI. The patents you use for simulations will be assumd to be in full force and effect at all relevant times… 2013-04-17 (Week 3)

5. RJM - IP: Sci Ev in Pat Lit - Spring 2013 5 Reading a Patent – Who asked you to? AI –to design around it to avoid infringement –to challenge validity or enforceability PAppl – –to see if you need to disclose (and claim around) –to see if you should buy/license it M&A – to evaluate an asset PO – to evaluate whether you can sue within the bounds of Rule 11 Why? AVOID inequitable conduct COMPLY with Rule 56Rule 56 and your duty of candor Obtain a solid patent 2013-04-17 (Week 3) link is to MPEP - it's good for finding cases, statutes and rules (PTO rules not Rules of Civil Procedure). PTO rules are cited 37 CFR 1.[rule#] Rule 11, F.R. Civ.P., not 37 CFR 1.11

6. RJM - IP: Sci Ev in Pat Lit - Spring 2013 6 Major Issues of Liability in Patent Law Validity Infringement Word police note: 'infringe,' in patent law, takes a direct object. Please say, "The accused device infringes the patent. " Please do NOT say, "It infringes ON the patent." The other part of a patent case, after liability is determined, is DAMAGES, or more generally REMEDIES 2013-04-17 (Week 3)

7. But first: some abbreviations used on the next slide. AI: Accused Infringer PO: Patent Owner BOP: burden of proof sometimes called 'burden of persuasion' QOP: quantum of proof sometimes called 'standard of proof' Judge Grewal mentions burden of production sometimes also called 'burden of going forward.' Understanding that means understanding 'prima facie case,' too. The Different Quanta of Proof Prep: Preponderance of the Evidence = 50%+Є C&C: Clear and Convincing Evidence = ~70%?? BARD: [evidence] beyond a reasonable doubt =99.99%? RJM - IP: Sci Ev in Pat Lit - Spring 2013 7 Major Issues of Liability in Patent Law 2013-04-17 (Week 3) How many s do we need on this slide?

8. RJM - IP: Sci Ev in Pat Lit - Spring 2013 8 Validity Infringement AI Preponderance C&C PO WHO HAS THE BOP? WHAT IS THE QOP? How do BOP and QOP affect the litigators and scientific experts? Major Issues of Liability in Patent Law 2013-04-17 (Week 3)

9. RJM - IP: Sci Ev in Pat Lit - Spring 2013 9 P-I-S v P.A. Situation A Patent-in-suit = NEW Prior Art Patent = OLD Situation B Patent-in-suit = OLD Patent on accused device = NEW Is the New patent valid over the Old patent? Is the Old patent infringed by someone PRACTICING the New patent? New PatentLook at New's CLAIMSLook at New's SPECIFICATION (to see what people do in order to PRACTICE New’s patent) Old PatentLook at Old's SPECIFICATION (to see what it TEACHES) Look at Old's CLAIMS Q.When do you look at the CLAIMS? A.When the patent is ________ 2013-04-17 (Week 3) This is the most important slide of the entire quarter.

10. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 10 SSI v TEK - Individual Questions - 1 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2 S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 C Question 8 on page 8.1 HS Question 8 on page 8.1 JE Question 8 on page 8.1 HC R AW

11. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 11 SSI v TEK - Individual Questions - 2 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2 S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 C Question 8 on page 8.1 HS Question 8 on page 8.1 JE Question 8 on page 8.1 SSI disputes that the patent discloses [TEK's contention concerning] simultaneous or distinct streams of compressed air that force sealant out of the container and also "continuously" or "directly" direct air into the tire. {4. What does this sentence suggest about TEK's product? Why else would TEK argue this? -RJM} P {In this Order, the court does not address what the level of skill is or what education and experience would characterize the HYPOTHETICAL person of ordinary skill in the art. Experts – who by definition are not ordinary – can and do testify to the state of knowledge of this hypothetical person at the relevant time in the past (usually many years before trial). 5. At trial, what might the parties’ technological experts testify about? –RJM} E S

12. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 12 SSI v TEK - Individual Questions - 3 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2 S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 C Question 8 on page 8.1 HS Question 8 on page 8.1 JE Question 8 on page 8.1 D JR These uses suggest that the absence of "integral" in the description of the receptacle is not happenstance. Without more, the court will not impose "integral" as a limitation. The claim term will be given its plain and ordinary meaning. See Phillips, 415 F.3d at 1323 (cautioning against reading limitations that may be present in the specification into the claim). {6. Why is it wrong to read a limitation from the specification into the claim? Who would urge doing so and why? When should it be permitted? AC

13. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 13 SSI v TEK - Individual Questions - 4 "an enclosure that may be formed within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant." "an enclosure that may be formed within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant." What "sealingly receives"? The "separate structure" or the "enclosure"? "an enclosure that may be formed within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant." remove the ambiguity by reversing the order

14. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 14 SSI v TEK Individual Questions - 5 "an enclosure that may be formed within and as an integral part of the housing or as a separate structure that sealingly receives air and/or tire sealant." "an enclosure that sealingly receives air and/or tire sealant. that may be formed within and as an integral part of the housing or as a separate structure " Replace the second THAT with 'and' or 'which'? Replace 'that may be formed' with 'the enclosure being formed...'? Replace 'within and as' with 'as and within' so that both phrases lead with an AS. This helps the reader who is looking for parallelisms.

15. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 15 SSI v TEK - Individual Questions - 6 HC Question 1 on page 2.1 R Question 2 on page 2.1 AW Question 3 on page 2.1 P Question 4 on page 3 E Question 5 on page 4.2 S Question 5 on page 4.2 AC Question 6 on 4.2 D Question 7 on page 6.2 JR Question 7 on page 6.2 C Question 8 on page 8.1 HS Question 8 on page 8.1 JE Question 8 on page 8.1 {8. Of the 10 claim terms and analyses, which did you like the best? Define “like.” Which did you like the least?-RJM}

16. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 16 SSI Claim Construction -1 Study the approach! It gives you a good idea about how lawyers (and later, their experts) confront a new patent that their client - (PO) is asserting or is thinking about asserting by writing The Letter (PO) is considering offering a license, possibly after writing The Letter (AI) is accused of infringing or thinks the other side is thinking about it and/or is considering starting a DJ (like SSI did) (AI) is considering taking a license, either because it received The Letter or otherwise or AI has found the patent and is about to make a product that might infringe and wonders what to do

17. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 17 SSI Claim Construction -2 "intrinsic evidence" = page 1.2 boldface claims specification prosecution history "extrinsic evidence" = page 2.2 after 2nd cite to Phillips. dictionaries testimony (whether by inventors, experts or others)

18. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 18 SSI Claim Construction -3 MYTH: the 'inventor' authors the specification and correspondence with the PTO. ("response to office action" aka "amendment") What's bad about this myth? TEK and the "direct and continuous stream" of compressed air. What How Why? p.3. Using prosecution history. Using particular embodiments.

19. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 19 SSI Claim Construction - 4 "Entrained" - Did the court 'read in' a limitation from the specification in the interpretation that this means "drawn" [into the air flow path]. Or did the court [merely] find a synonym? Review: READ IN (INTO) != READ ON (now called "MAP") READ IN(INTO) v. CONSTRUE CONSTRUE: Is the construction for all time forever after?

20. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 20 Markman Orders and other things that cause cases to settle {In the Northern District of California by Local Rule, and elsewhere either by Local Rule or judge's rule, the parties must, well before trial, identify all the disputed terms in the claims (or as many terms as the court is willing to consider, usually about ten as here) and propose constructions for them. The court then construes the terms, sometimes choosing one of the parties' constructions, sometimes crafting its own. These constructions then govern subsequent motions, such as motions for summary judgment, as well as the trial. Experts are often involved in assisting with claim construction and sometimes present a tutorial in court. Usually the hearing on claim construction consists of attorney argument but it can include live testimony from experts. The Construction Order, sometimes called a Markman Order after a famous case about claim construction (full cite in opinion above) often leads to early settlement. These orders, generally unappealable until there is a final judgment, can be overturned by the appellate court. When that happens, a new trial is usually ordered. More in class about factors leading to settlement, and the role of experts at early stages of the litigation. -RJM} page 2-3

21. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 21 Obviousness(SSI-SJ, KSR), Field Trip, TOAs TOA lists - week 1 and week 2(known, clueless, in between)week 1week 2 Rob: infringement, reissue, inequitable conduct Scott: prosecution, litigation, work product privilege on homepage, linked below date (see next slide)KSRSSITrialandyfrustratedamused tues pm (+reporter) asaannoyedflabbergasted chinyeresurprisedsurprised mon all david(exempt) wed am (+reporter) emilymystifiedsurprised tues pm heliosurprisedsurprised mon all (+reporter) hernanamusedintrigued wed am jennvexedunimpressed tues pm patrickintriguedimpressed robconfusedsurprisedTOAs scottconfusedfrustratedTOAs

22. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 22 Field TripKSRSSITrialandyfrustratedamused tues pm (+reporter) asaannoyedflabbergasted chinyeresurprisedsurprised mon all david(exempt) wed am (+reporter) emilymystifiedsurprised tues pm heliosurprisedsurprised mon all (+reporter) hernanamusedintrigued wed am jennvexedunimpressed tues pm patrickintriguedimpressed robconfusedsurprisedTOAs scottconfusedfrustratedTOAs What did we miss by not going Monday? Tuesday afternoon? Today? Rob and Scott: question these people! Trippers: What was most surprising? As expected? Difficult?

23. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 23 SSIKSRSSITrialandyfrustratedamused tues pm (+reporter) asaannoyedflabbergasted chinyeresurprisedsurprised mon all david(exempt) wed am (+reporter) emilymystifiedsurprised tues pm heliosurprisedsurprised mon all (+reporter) hernanamusedintrigued wed am jennvexedunimpressed tues pm patrickintriguedimpressed robconfusedsurprisedTOAs scottconfusedfrustratedTOAs explain yourself! Also discuss: Good guy and bad guy determination Credibility of COUNSEL not just witnesses Role of Experts Andy (validity v. infringement during prosecution) Asa (Japanese patents)

24. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 24 KSR - 1KSRSSITrialandyfrustratedamused tues pm (+reporter) asaannoyedflabbergasted chinyeresurprisedsurprised mon all david(exempt) wed am (+reporter) emilymystifiedsurprised tues pm heliosurprisedsurprised mon all (+reporter) hernanamusedintrigued wed am jennvexedunimpressed tues pm patrickintriguedimpressed robconfusedsurprisedTOAs scottconfusedfrustratedTOAs Explain yourself! Graham Analysis - KSR p.2.1 Primary Considerations: 1. Scope and content of the PA, 2. Differences between the CLAIMED invention and the PA, 3. Level of Skill in the Art Secondary Considerations: Long-felt unmet need, commercial success, failure of others, [etc.] but must have NEXUS.

25. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 25 KSR - 2 P.3 Who wrote the facts? P.3 Seven (7) pieces of prior art to render the claimed combination obvious??? P. 5. Word Police: Claims do not disclose. Likewise, the specification does not claim. Nor does the prior art. P. 5. Really bad greedy sleazy PO or normal PO? P. 6 The odor of inequitable conduct P. 7 A 'rigid' approach? Scott as defender! P.8 teaches AWAY. Remember: AWAY.

26. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 26 KSR - 3 P. 9 A person or ordinary skill in the Supreme Court Justice art? P. 9 Market Demand? On summary judgment? P. 9 A later patent deprives an earlier one of its 'value or utility'? P.10 Start with the problem the inventor wanted to solve, but ignore the inventor's avowed purpose or particular motivation?? P. 11: KSR's own patent application?? P. 14: Convincing evidence (on SJ) of obviousness of adding Asano to fixed pivot point.

27. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 27 TOA Lists on homepage, linked below date

28. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 28 Next Week Next Week: Guest Speaker: Alicia Frostick Shah, Partner, Kirkland & Ellis [also MMPS from patent law 2004 and advanced patent seminar 2005] In preparation, read a transcript from a claim construction hearing in a case she was following. Read the SJ/Cl Const order that followed that hearing (and consideration of voluminous evidence and oversized briefs) Grad students: find some patents for possible use in the simulation. Law students: check if those patents have been litigated.

29. 2013-04-17 (Week 3) RJM - IP: Sci Ev in Pat Lit - Spring 2013 29 SSI v TEK - Claim Construction Winner? 6:6 andyTEK asaSSI chinyereTEK emilySSI davidTEK helioTEK hernanTEK jennSSI jenniferTEK patrickSSI robSSI scott SSI